Brexit: (mostly) business as usual for intellectual property

Published on 26 Jun, 2016

The impact of the British withdrawal from the EU, commonly referred to as “Brexit”, on the United Kingdom (UK) and global economy is currently the subject of much debate and discussion in the general media. Changes to complete the UK exit from the EU are expected to take place slowly with details being negotiated over the next two years and with Brexit taking effect, at the earliest, in October 2018. As such, the precise implications for protection of patents, trade marks and designs are not yet known. Nonetheless, we can offer reassurance at this stage that any changes are expected to be fairly limited and easily managed.

Patents

No significant modifications to the current patent system are expected Specifically, Brexit does not affect the UK’s membership of the European Patent Convention (EPC) system as the EPC is entirely independent from the EU. Hence, under the EPC system widely utilised by our Australian and New Zealand clients it will still be possible to validate a granted European patent in the UK. Further, UK-based attorneys presently instructed by Shelston IP will continue to file and prosecute patent applications before the European Patent Office (EPO). It is business as usual, therefore, insofar as standard European (EPC) patent applications are concerned.

On the other hand, the UK was one of three countries required to ratify legislation to bring the much-anticipated European Union Patent (EUP) and the Unitary Patent Court (UPC) into force. The UK will not ratify the legislation now and, as a result, the future of this new system is somewhat uncertain. However, in a statement issued on 24 June 2016, the President of the European Patent Office, Benoît Battistelli, said in relation to the EUP that the EPO “expects that the UK and the participating EU member states will find a solution as soon as possible which will allow a full implementation of these so-long awaited achievements”.

Trade marks

Currently UK trademarks are obtained either by way of a national registration or an EU registration (until recently known as a Community Trademark Registration, currently EUTM). When Brexit is completed, EUTMs will cease to apply in the UK. However, it is expected that the transitional arrangements will include a mechanism for the conversion of EUTMs to UK trade marks. Naturally, EUTMs used only in the UK would become vulnerable to non-use revocation unless, of course, they are put into use in other EU member states.

As the UK is a member state of the Madrid Protocol (through which trade marks can be registered in multiple jurisdictions), a national UK trade mark registration will continue to be available through this system.

Registered Designs

The situation in relation to design registrations is similar to that for trade marks. Once Brexit is effected, existing Registered Community Designs (RCDs) will cease to apply in the UK. However, transitional arrangements similar to those anticipated for trade marks are likely to be put in place such that current RCDs are likely to be afforded protection in the UK.

Once Brexit comes into force, new RCDs to cover the UK will not be available so a separate UK national design registration application will be required.­­­­­­­­­­­­­­­­­­­

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While we emphasise that any changes resulting from Brexit will not come into effect for some time, it is always prudent to review IP strategies regularly to ensure that they align with global economic conditions and legislative changes. In addition to ensuring that applications for IP rights are lodged via the correct mechanism (an international system or the national UK system) and ensuring compliance with any requirements relating to the transitional provisions, we suggest that companies, institutes or universities also review their contracts to ensure that the terms accurately reflect the parties’ intentions in the post-Brexit regime.

We will, of course, continue to keep you promptly informed of developments. For further information, please contact your Shelston IP attorney or send your query to email@Shelstonip.com